L.A. Triumph, Inc. v. Madonna Louise Veronica Ciccone et al
Filing
14
ANSWER to Amended Complaint 9 filed by Defendant Macy's Retail Holdings, Inc.(Belfield, George)
1 GREENBERG TRAURIG, LLP
George M. Belfield (SBN 100272)
2 Email: belfieldg@gtlaw.com
3 Nina D. Boyajian (SBN 246415)
Email: boyajiann@gtlaw.com
4 2450 Colorado Avenue, Suite 400 East
Santa Monica, CA 90404-5524
5 Telephone: (310) 586-7700
6 Facsimile: (310) 586-7800
7 Attorneys for Defendants
MADONNA LOUISE VERONICA CICCONE,
8 MATERIAL GIRL BRAND, LLC, MG ICON, LLC
and MACY'S RETAIL HOLDINGS, INC.
9
10
UNITED STATES DISTRICT COURT
11
CENTRAL DISTRICT OF CALIFORNIA
12
WESTERN DIVISION
13
14
15 L.A. TRIUMPH, INC., a California
corporation,
16
Plaintiff,
17
18 vs.
19 MADONNA LOUISE VERONICA
CICCONE, an individual; MATERIAL
. 20 GIRL BRAND, LLC, a Delaware limited
liability company; MG ICON, a Delaware
21 limited liability company; MACY'S
RETAIL HOLDINGS, INC., a Delaware
22 corporation; and DOES 1 through 10,
23
Defendants.
24 l-------------~
CASE NO. CV 10 6195-SJO (JCx)
DEFENDANT MACY'S RETAIL
HOLDINGS, INC.'S ANSWER TO
FIRST AMENDED COMPLAINT
DEMAND FOR JURY TRIAL
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MACY'S'
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ANSWER TO FIRST AMENDED COMPLAINT
1
Defendant Macy's Retail Holdings, Inc. ("Macy's"), for itself alone, hereby
2 answers Plaintiff L.A. Triumph, Inc.' s ("L.A. Triumph") First Amended Complaint
3 ("FAC") as follows:
4
5
JURISDICTION
1.
AND VENUE
Answering paragraph 1 of the FAC, Macy's admits that this Court has
6 jurisdiction over these federal question trademark claims under the Lanham Act.
7
2.
Answering paragraph 2, Macy's admits that venue is proper in this District.
8
9
PARTIES
3.
Macy's lacks sufficient information and belief to answer the allegations of
10 paragraph 3 and, therefore, denies each and every allegation therein.
11
4.
Macy's lacks sufficient information or belief to answer the allegations of
12 paragraph 4 and, therefore, denies each and every allegation therein.
13
5.
Macy's lacks sufficient information or belief to answer the allegations of
14 paragraph 5 and, therefore, denies each and every allegation therein.
15
6.
Macy's lacks sufficient information and belief to answer the allegations of
16 paragraph 6 and, therefore, denies each and every allegation therein.
17
7.
Answering paragraph 7, Macy's admits and alleges that it is a corporation
18 existing under the laws of New York with its principal place of business in Cincinnati,
19 Ohio. Macy's further admits and alleges that it operates retail department stores in
20 California and other parts of the United States.
21
8.
Macy's denies the allegations of paragraph 8.
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23
FACTS COMMON TO ALL COUNTS
9.
Macy's lacks sufficient information or belief to answer the allegations of
24 paragraph 9 and, therefore, denies each and every allegation therein.
25
10.
Macy's lacks sufficient information or belief to answer the allegations of
26 paragraph 10 and, therefore, denies each and every allegation therein.
27
11.
Answering paragraph 11, Macy's admits that the public record discloses that
28 there was a trademark registration filed by O.C. Mercantile with the California Secretary
1
MACY'S'
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ANSWER TO FIRST AMENDED COMPLAINT
1 of State, No. 102808, for "Material Girl" on about August 5, 1997, but allege that said
2 trademark registration expired on or about August 5,2007. Except as expressly admitted
3 and alleged herein, Macy's lacks sufficient information or belief to answer the other
4 allegations of paragraph 11 and, therefore, denies said allegations.
5
12.
Macy's lacks sufficient information or belief to answer the allegations of
6 paragraph 12 and, therefore, denies each and every allegation therein.
7
13.
Macy's lacks sufficient information or belief to answer the allegations of
8 paragraph 13 and, therefore, denies each and every allegation therein.
9
14.
Macy's lacks sufficient information or belief to answer the allegations of
10 paragraph 14 and, therefore, denies each and every allegation therein.
11
15.
Macy's lacks sufficient information or belief to answer the allegations of
12 paragraph 15 and, therefore, denies each and every allegation therein.
13
16.
Macy's denies the allegations of paragraph 16.
14
17.
Answering paragraph 17, Macy's admits and alleges that MG Icon in 2010
15 has been involved in selling a line of juniors' clothing for young women utilizing the
16 mark "Material Girl" including through Macy's. Except as expressly admitted and
17 alleged herein, Macy's denies the other allegations of paragraph 17.
18
18.
Macy's lacks sufficient information or belief to answer the allegations of
19 paragraph 18 and, therefore, denies each and every allegation therein.
20
19.
Answering paragraph 19, Macy's admits that Material Girl Brand, LLC,
21 now known as MG Icon, LLC, filed a United States Trademark Application on
22 December 4,2009 for the "Material Girl" mark for clothing in international class 025 and
23 other classes under application No. 77/886,045. Except as expressly admitted and
24 alleged herein, Macy's denies the other allegations of paragraph 19.
25
20.
Answering paragraph 20, Macy's admits that MG Icon obtained certain
26 rights to the "Material Girl" name, and that MG Icon, among others, is responsible for
27 manufacturing the t'Material Girl" line of juniors , clothing. Except as expressly admitted
28 and alleged herein, Macy's denies the other allegations of paragraph 20.
2
MACY'S'
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ANSWER TO FIRST AMENDED COMPLAINT
1
21.
Answering paragraph 21 ~Macy's admits and alleges that Macy's is a retailer
2 currently selling, advertising, and promoting the "Material Girl" line of juniors' clothing.
3 Except as expressly admitted and alleged herein, Macy's denies the other allegations of
4 paragraph 21.
5
22.
6
Macy's denies the allegations of paragraph 22.
ANSWER TO FIRST CLAIM FOR RELIEF
7 (Declaratory Relief against MGB, Madonna, and MG Icon under 28 U.S.C. § 2201)
8
23.
Answering paragraph 23~Macy's incorporates by reference paragraphs 1
9 through 22, inclusive, of this Answer as if set forth in full herein.
10
24.
Macy's is not a party to the First Claim for Relief which is not alleged
11 against Macy's and, therefore, is not answering paragraph 24.
12
25.
Macy's is not a party to the First Claim for Relief which is not alleged
13 against Macy' s and, therefore, is not answering paragraph 25.
14
ANSWER TO SECOND CLAIM FOR RELIEF
15
(Violation of Lanham Act § 43(a) against MGB and DOES 1-10)
16
26.
Answering paragraph 26, Macy's incorporates by reference paragraphs 1
17 through 25, inclusive, of this Answer as if set forth in full herein.
18
27.
Macy's lacks sufficient information or belief to answer the allegations of
19 paragraph 27 and, therefore, denies said allegations.
20
28.
Macy's lacks sufficient information or belief to answer the allegations of
21 paragraph 28 as to Plaintiff and, therefore, denies said allegations.
22
29.
Answering paragraph 29, Macy's admits and alleges that MG Icon and/or
23 Macy's has in 2010, and continues to advertise and sell certain clothing using the name
24 Material Girl. Macy's lacks sufficient information or belief to answer the other
25 allegations of paragraph 29 and, therefore, denies said allegations.
26
30.
Macy's denies the allegations of paragraph 30.
27
31.
Macy's denies the allegations of paragraph 31.
28
32.
Macy's denies the allegations of paragraph 32.
3
MACY'S'
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ANSWER TO FIRST AMENDED COMPLAINT
1
AFFIRMATIVE DEFENSES
2
FIRST AFFIRMATIVE DEFENSE
3
(Failure to State a Claim for Relief)
4
1.
Plaintiff s FAC, and each claim for relief therein, fails to state facts
5 sufficient to constitute a claim for relief against Macy's.
6
SECOND AFFIRMATIVE DEFENSE
7
(Prior Use)
8
2.
The other defendants or their predecessors-in-interest
have used the
9 "Material Girl" mark since in or about 1985, which is more than a decade before
10 Plaintiff s alleged use.
11
THIRD AFFIRMATIVE DEFENSE
12
(Abandonment)
13
3.
Plaintiffs registration of the "Material Girl" mark was limited to the State
0
14 California, expired on or about August 5, 2007, and has been abandoned by Plaintiff.
15
FOURTH AFFIRMATIVE DEFENSE
16
(No Likelihood of Confusion)
17
4.
Macy's contends that Plaintiffs uses of the "Material Girl" name and
18 trademark were and are improper. In any event, there is no likelihood of confusion for
19 the public due to Macy' s' uses of the "Material Girl" name and mark; indeed, it is
20 Plaintiff s use of the name and mark which is likely to cause confusion for the public.
21
FIFTH AFFIRMATIVE DEFENSE
22
(Fair Use)
23
5.
Plaintiff s claims are barred under the doctrine of fair use because Macy's'
24 use of the name "Material Girl" includes using the name to identify the person endorsing
25 MG Icon's business, i.e. Madonna, who popularized the name "Material Girl," and gave
26 it secondary meaning; Macy' s' use of the "Material Girl" name and mark does not
27 describe or capitalize on plaintiffs use of "Material Girl."
28
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MACY'S'
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ANSWER TO FIRST AMENDED COMPLAINT
1
SIXTH AFFIRMATIVE DEFENSE
2
(Laches)
3
6.
Plaintiff has failed for over 15 years to raise any issues with or contest prior
4 uses of the "Material Girl" name and mark and Plaintiff s FAC is thus barred under the
5 doctrine of laches.
6
SEVENTH AFFIRMATIVE DEFENSE
7
(Estoppel)
8
7.
Plaintiffs FAC is barred under the doctrine of estoppel. For example, when
9 due diligence was done on the "Material Girl" trademark for registration purposes, there
10 was no federal registration by Plaintiff, and the California registration had expired and
11 was abandoned; co-defendants reasonably relied on this fact in applying to register and in
12 using the "Material Girl" mark in the retail clothing applications alleged in the FAC.
13 Furthermore, Plaintiff over the years never contacted defendants, or their related parties
14 or representatives, to make any claims or complaints with respect to the "Material Girl"
15 name.
16
EIGHTH AFFIRMATIVE DEFENSE
17
(Misrepresentations and Fraud Re Plaintiff's Trademark Registration)
18
8.
Macy's is informed and believes, and thereon alleges, that Plaintiff procured
19 its California trademark registration for "Material Girl" based on misstatements,
20 omissions of fact, misrepresentations and/or fraud including, without limitation,
21 representing in 1997 that to Plaintiffs, or Plaintiffs predecessorO.C.
Mercantile's, best
22 knowledge and belief, no other person, firm or corporation had the right to use such mark
23 in California, either in identical form or in such near resemblance thereto as might be
24 calculated to deceive or confuse.
25
NINTH AFFIRMATIVE DEFENSE
26
(Unclean Hands)
27
9.
Plaintiffs FAC is barred under the doctrine of unclean hands due to
28 Plaintiffs own inequitable conduct with respect to this matter.
5
MACY'S'
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ANSWER TO FIRST AMENDED COMPLAINT
1
TENTH AFFIRMATIVE DEFENSE
2
(No Damages)
3
10.
Plaintiff has suffered no damages as a result of Macy's' uses of the
4 "Material Girl" name and mark; indeed, Plaintiff, on information and belief, may have
5 benefited from Macy's' use of the "Material Girl" name.
6
ELEVENTH AFFIRMATIVE DEFENSE
7
(Sham Litigation)
8
11.
Plaintiff s FAC constitutes sham litigation filed for an improper purpose to
9 interfere with and suppress fair competition.
10
TWELFTH AFFIRMATIVE DEFENSE
11
(Statute of Limitations)
12
12.
Plaintiff s FAC, and each claim for relief therein, is barred by the applicable
13 statutes of limitations.
14
WHEREFORE, defendant Macy's Retail Holdings, Inc. prays for relief as follows:
15
1.
That plaintiff take nothing on its First Amended Complaint, and that this
16 action be dismissed with prejudice;
17
2.
For attorney's fees as allowed by law;
18
3.
For its costs of suit herein; and
19
4.
For such further and other relief as the Court deems just and proper.
20
GREENBERG TRAURIG, LLP
21 Dated: November 3,2010
22
lsi George M. Belfield
By:
23
GEORGE M. BELFIELD
Attorneys for Defendants
MADONNA LOUISE VERONICA
CICCONE, MATERIAL GIRL BRAND,
LLC, MG ICON, LLC and
MACY'S RETAIL HOLDINGS, INC.
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MACY'S'
129,174,992
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ANSWER TO FIRST AMENDED COMPLAINT
DEMAND FOR JURY TRIAL
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2
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Defendant Macy's Retail Holdings, Inc. hereby demands a trial by jury.
4
GREENBERG TRAURIG, LLP
5 Dated: November 3, 2010
6
lsi George M. Belfield
By:
7
GEORGE M. BELFIELD
Attorneys for Defendants
MADONNA LOUISE VERONICA
CICCONE, MATERIAL GIRL BRAND,
LLC, MG ICON, LLC and
MACY'S RETAIL HOLDINGS, INC.
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MACY'S'
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ANSWER TO FIRST AMENDED COMPLAINT
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